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On August 15, 2017, the Federal Circuit reversed a district court dismissal of a patent infringement complaint. The district court had found that the claims of the asserted patent[1] were directed to the “abstract idea of categorical data storage,” noting that “[h]umans have categorized data for many years.”[2] Consequently, the district court held that the ‘740 patent was drawn to patent-ineligible subject matter and the patentee’s complaint therefore failed to state a claim under Federal Rule of Civil Procedure 12(b)(6). In a precedential opinion, Visual Memory LLC v. NVIDIA Corporation, a divided Federal Circuit panel disagreed, finding that the patent claims were directed to an improvement to technology and were therefore not directed to an abstract idea. The decision further affirms the merits of describing technological improvements provided by the claimed subject matter within the specification in order to take advantage of a line of Federal Circuit cases that find patentable subject matter by doing the same.

The Federal Circuit in Visual Memory noted that claims of the ‘740 patent, such as claim 1, reflected an “improvement to computer memory systems” and therefore were not directed to an abstract idea.[3] Claim 1 of the ‘740 patent recites:

1. A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

a main memory connected to said bus;

and a cache connected to said bus;

wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

Specifically, the Federal Circuit stated that the ‘740 patent described a current technological landscape in which computer systems frequently employ a three-tiered memory hierarchy that includes: 1) a low cost, low speed memory (e.g., a magnetic disk); 2) a medium-speed memory that serves as the main memory; and 3) an expensive, high-speed memory that acts as a processor cache memory.[4] The Federal Circuit noted that, upon this landscape, the ‘740 patent discussed a system where the use of the processor cache is programmable, such that the cache is used differently (e.g., more efficiently) with different processors.[5] In this way, the ‘740 patent teaches that it may “offer[] faster access to main memory and increase[] system performance.”[6]

After discussing these alleged improvements within the ‘740 patent, the Federal Circuit applied the Alice framework. In the first step of the Alice test, the Federal Circuit analyzed whether the claims of the ‘740 patent were directed to a patent-ineligible concept, such as laws of nature, natural phenomena, and abstract ideas. The court began this analysis by quoting Enfish, LLC v. Microsoft Corp. and noting that it must “ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” Referencing the aforementioned improvements discussed within the ‘740 patent, the majority determined that the claims of the ‘740 patent “are directed to an improved computer memory system, not to the abstract idea of categorical data storage.”

As argued by the dissent, the lowest allowable level of abstraction that is appropriate for the ‘740 claims is “categorical data storage.” In Enfish it was found that the claims were “directed to a specific improvement in the way computers operate,”[7] which was only possible because the claims “were not directed to any form of storing tabular data, but instead [we]re specifically directed to a self-referential table.”[8] Conversely, the dissent argued, claim 1 of the ‘740 patent recites a system comprising a main memory and a cache connected to a bus with a programmable operational characteristic without “provid[ing] any specific limitations” on the programmable operational characteristic limitation, such that the programmable operational characteristic is “nothing more than a black box,” while the remaining computer elements are “nothing more than a collection of conventional computing components.”

It is not clear how or if the Alice test was applied differently between Enfish and Visual Memory, such that this decision indicates an evolution of the Alice test. Both decisions started the first step analysis by asking whether the claims were directed to an improvement to computer functionality,[9] after which the courts analyzed whether the focus of the claims was on the asserted improvement by parsing through the specific language of the claims.[10] Both decisions determined that the respective claims were not directed to an abstract idea. In both decisions, the Federal Circuit panels considered whether or not the claims captured all aspects of the alleged abstract idea;[11] in both decisions, the fact that claims did not cover all such aspects weighed toward the respective claims being subject-matter eligible. Upon finding that the respective claims were not directed to an abstract idea, neither decision proceeded to the second step of the Alice test.

There were, however, some minor differences in analysis between the two decisions. For example, in Visual Memory, the Federal Circuit referenced Thales Visionix Inc. v. United States, a decision that also relied upon Enfish, in stating that “what the claims are directed to” must be “articulate[d] with specificity.”[12] This decision also referenced Thales as another example of a decision in which features of a patent’s claims provided improvements to the technology of the claims as described in the patent’s specification, such that claims of the patent were directed to patent-eligible subject matter.[13] However, the two uses of Thales here appear to be consistent with the line of reasoning employed in Enfish, such it does not appear that Thales fundamentally changes the analysis of Visual Memory.

Another distinction between the analysis within Enfish and the instant decision is that Visual Memory referenced the relative specificity of the dependent claims in asserting that the claims were patent-eligible,[14] a tactic not employed in Enfish or Thales. The court does not explicitly explain why it references the dependent claims in asserting that the claims were not directed to an abstract idea, and this line of reasoning feels odd, as logically if all of the independent claims were directed to patent-eligible subject matter than all of the dependent claims would immediately be as well (unless the dependent claims were otherwise improper for impermissibly broadening the scope of the independent claim). One possible reason is that the court was simply trying to do its due diligence in showing that, even if the independent claim was not directed to patent-eligible subject matter, the dependent claims were. However, another possible reason is that the court used the limitations of the dependent claims to understand or characterize the corresponding independent claim—a tactic which, if perhaps valuable for purposes of eliminating § 101 rejections, may lead to uncertainty in defining the scope of independent claims.

Another noteworthy development to come from this decision was the distinction that Visual Memory draws between § 101 and § 112. As summarized by the majority, “the dissent contends that the claimed programmable operational characteristic is ‘nothing more than a black box,’ that ‘the patent lacks any details about how [the invention’s purpose] is achieved,’ and that ‘because the ’740 patent does not describe how to implement the ‘programmable operational characteristic’ and requires someone else to supply the innovative programming effort, it is not properly described as directed to an improvement in computer systems.’”[15] Initially, the majority notes that a microfiche appendix of the patent includes 263 frames of computer code, such that the only proper assessment of this appendix under Rule 12(b)(6) (in which all factual inferences must be drawn in favor of the non-moving party) is that the appendix provides an enabling disclosure.[16]

However, more relevant for subject matter eligibility purposes, the majority stated that “whether a patent specification teaches an ordinarily skilled artisan how to implement the claimed invention presents an enablement issue under 35 U.S.C. § 112, not an eligibility issue under § 101.”[17] Given that some had been noting that the once-clear lines between § 101 and the other sections of 35 U.S.C had seemed to get relatively blurry, it was a conspicuous clarification from the Federal Circuit that the sections are to be analyzed independently. Further, while this rationale does not specifically speak to a corollary distinction between § 101 and § 103, it may serve as a shot across the bow for a district court judge that may try to blur such a distinction, for better or for worse.

Interestingly, the majority did not stop there, but made another argument as to why the dissent erred in arguing that the claims were abstract as a result of allegedly requiring further innovative effort. Specifically, the majority noted:

“The specification makes clear that the inventors viewed their innovation as the creation of ‘a memory system which is efficiently operable with different types of host processors,’ ’740 patent col. 2 ll. 65–67, and the patent discloses how to implement such a memory system. Specifically, as demonstrated above, both the specification and the claims expressly state that this improved memory system is achieved by configuring a programmable operational characteristic of a cache memory based on the type of processor connected to the memory system.”[18]

Put differently, the majority appears to imply that the specification of a patent may dictate or at least indicate what innovation is and isn’t necessary to utilize the claims. While it can be dangerous to ever state or imply in the specification what the invention is,[19] it is interesting to note that, by carefully and clearly describing which features provide improvements, a practitioner may seemingly delineate the innovative effort necessary to utilize the claim (at least for purposes of § 101). However, it is worth noting that some or all of this analysis may be inapplicable in other contexts, as the majority noted that “[t]his conclusion is particularly proper on a motion to dismiss under Rule 12(b)(6), where all factual inferences drawn from the specification must be weighed in favor of Visual Memory, the non-moving party.”[20]

Regardless, if there is one clear takeaway from Visual Memory LLC v. NVIDIA, it is further verification that at least some judges of the Federal Circuit put great weight on technological improvements to the prior art that flow from the claims as discussed in the specification. As such, patent practitioners should continue including clear statements within their specifications explaining why features of the claims provide technological improvements. It is further probably worthwhile to use the exact language from the claims when possible, as well as the language of dependent claims that may be pulled into any independent claims during prosecution. When it comes to arguing that claims aren’t abstract, one can never have too much concrete evidence.